3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2016. On September 9, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 9, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2016. Respondent did not submit any formal response. However, on September 12, 2016, the Complainant forwarded to the Center an informal email communication from Respondent to the Complainant sent on September 11, 2016.

The Center appointed Robert A. Badgley as the sole panelist in this matter on October 13, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

According to the Complaint, Complainant was founded in 2009 and provides, under the trademark WEWORK, “co-working and private workspaces to its customers (known as members), and also provides them with infrastructure, support, event and technical services.” By 2014, Complainant asserts, it was considered “the fastest-growing lessee of new office space in New York.” Complainant has “approximately 80 co-working locations across North America, Europe, the Middle East, and Asia.”

Complainant expanded its business “beyond commercial real estate into residential real estate,” and has done so under the WELIVE trademark.

The WEWORK and WELIVE trademarks have been registered for several years. Complainant is the owner of United States Registration Number 4,015,942 for WEWORK, registered on August 23, 2011, and International Registration Number 1213065 for WELIVE, registered on December 26, 2013. These marks are also registered in dozens of jurisdictions around the world.

Respondent registered the 40 Domain Names at issue at various times between March 4, 2016 and April 16, 2016. The Domain Names resolve to parking pages displaying pay-per-click (“PPC”) advertising. According to Complainant, on March 3, 2016, the day before Respondent registered the first of the 40 Domain Names, Respondent “joined the WEWORK community as a member of Complainant’s Astoria, Queens location in New York City.” In the WEWORK membership agreement, Complainant asserts, Respondent is listed as the “primary member” for a company called “Megavision”. The WEWORK membership was later transferred to Respondent’s company, Various Concepts Inc. By August 10, 2016, Respondent was no longer a member of the WEWORK community.

Complainant learned of Respondent’s registration of 11 of the Domain Names, and on March 31, 2016 sent Respondent an email. On April 2, 2016, Respondent sent an email to Complainant, stating that he had registered the Domain Names in order to address his requests that had been “ignored” by Complainant, and to point out to Complainant that it is “vulnerable” to cybersquatting. Respondent also suggested that he had advice for Complainant which was of some “value.” Further detail about such alleged advice and its value is lacking in the record.

Following this exchange in early April 2016, Respondent registered the remainder of the 40 Domain Names on or before April 16, 2016.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has satisfied the three elements required under the Policy for a transfer of all 40 Domain Names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that Complainant holds rights, through registration and use, in the marks WEWORK and WELIVE.

With respect to the issue of confusing similarity, each of the 40 Domain Names must be considered on its own. Thirty two of the Domain Names contain either the character string “wework” or “welive” in the Second-Level Domain (“SLD”), and the SLD also contains a generic or short prefix or suffix (for example, “space”, “co”, “inc”, “copyright”, “s”, “my”, etc.). These Domain Names are confusingly similar to Complainant’s marks. The additional letters or terms do not sufficiently distinguish the mark from the dominant portion of the SLD.

Three of the Domain Names have a SLD comprised entirely of the mark WEWORK together with the Top-Level Domains (“TLDs”) of “.am”, “.fm”, and “.domains”. These Domain Names are identical to the WEWORK mark.

Typically, the TLD is not considered when determining confusing similarity under the Policy. There are, however, some limited circumstances in which it may be appropriate to consider the TLD in connection with the analysis of confusing similarity. This has become more relevant with the advent of numerous new and conceptual TLDs in recent years (such as “.work” and “.live”). Three of the 40 Domain Names – <joinwe.work>, <nycwe.work>, and <rentmywe.work> – involve a trademark which “spans the dot.” In other words, Complainant’s WEWORK mark is split up with the “we” located at the end of the SLD and the “work” constituting the TLD. When one looks at each of these Domain Names in their entirety (i.e., the SLD and the TLD), Complainant’s WEWORK mark is very apparent despite the fact that each of these Domain Names is interrupted by a dot. In the Panel’s view, these three Domain Names are confusingly similar to the WEWORK mark.

The Panel has adopted a similar approach for the two remaining Domain Names <werent.live> and <wevents.work>. The Panel notes, when considering the SLDs of these Domain Names, together with the TLDs “.live” and “.work” that the only difference between these Domain Names and Complainant’s WEWORK and WELIVE marks is the inclusion of the descriptive terms “rent” and “vents”. Indeed, in the case of the Domain Name <werent.live>, the “werent” portion considered together with the TLD “.live” clearly evokes Complainant’s WELIVE trademark with the term “rent” merely interrupting Complainant’s mark, which remains recognizable within the Domain Name <werent.live>. In the case of the Domain Name <wevents.work>, disregarding the descriptive term “vents”, the Panel finds that the Domain Name <wevents.work> similarly evokes Complainant’s WEWORK trademark so as to constitute confusing similarity with that trademark for the purposes of paragraph 4(a)(i) of the Policy. In considering all of the Domain Names, the Panel is cognizant that Respondent has clearly sought to evoke Complainant’s mark and as such to confuse users; the Panel will give Respondent the benefit of the doubt that such confusion is present. See King.com Limited and Midasplayer.com Ltd. v. Whoisguard, Inc. and Rami Ivey,
WIPO Case No. D2014-0017.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the Domain Names. It is not clear what Respondent actually intended to do with the Domain Names, but nothing in the record appears to reflect or even adumbrate a legitimate use of the Domain Names. Further, Respondent has not come forward to explain its putative bona fides.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

On this record, the Panel is not sure whether Respondent harbored an ultimate purpose for the Domain Names. There is some suggestion in the email exchange between the Parties that Respondent may have been seeking to exchange the Domain Names for some type of consideration, but the email exchange is too cryptic to reach such a conclusion with confidence.

The Panel can, however, find bad faith registration and use under the above-quoted paragraph 4(b)(ii). Respondent, a former member of the “WEWORK community” clearly had Complainant’s trademarks in mind when registering the 40 Domain Names. Indeed, 29 of the 40 Domain Names were registered after the Parties’ email exchange in early April 2016. The registration of 40 Domain Names in these circumstances constitutes, in the Panel’s view, a “pattern” of preclusive registrations within the meaning of paragraph 4(b)(ii).